BULKY DOCUMENTS
`(exceeds 300 pages)
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`Proceeding] Serial No: 9 1 1 64955
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`Filed: 07- 14-2006
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`Title: Motion for Summary Judgement to
`Dismiss The Opposition and Cancel Opposer’s
`Reg No. 2,714,961 — Oyster Bay 8:, Design
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`Part 1 of 1
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`DELEGAT’S WINE ESTATE LIMITED
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`Opposer/Counterclaim-Respondent,
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`v.
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`THE FRESH OYSTER, LLC,
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`Applicant/Counterclaim-Petitioner.
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`:
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`:
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`:
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`T T A B
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`Opposition No. 91-164,955
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`MOTION FOR SUMMARY JUDGMENT TO DISMISS THE OPPOSITION
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`AND CANCEL OPPOSER’S REG. NO. 2,714,961 — OYSTER BAY & Design
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`Applicant/Counterclaim-Petitioner, The Fresh Oyster, LLC (“Applicant”) respectfully
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`moves for summary judgment pursuant to Fed. R. Civ. P. 56. to dismiss the opposition and
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`sustain its counterclaim to cancel Opposer’s Reg. No. 2,714,961 — OYSTER BAY & Design for
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`“wine.” For the reasons set forth in the accompanying Memorandum in Support of Summary
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`Judgment and accompanying Declarations and Exhibits, there are no material issues of fact
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`regarding the Opposition and Counterclaim and judgment on both counts should be entered as a
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`matter of law.
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`In support of App1icant’s motion, Applicant submits the Declarations of Christine Helena
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`Baral, Luna M. Samman and Caterina Carmen Abbruzzetti, and refers the Board to the
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`accompanying Memorandum of Points and Authorities.
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`H OYSTER, LLC
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` No
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`D. St. Landau
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`Brian A. Coleman
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`Luna M. Sarnman
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`Drinker Biddle & Reath LLP
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`,
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`_
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`1500 K Street, N.W., Suite 1100
`g Washington, D.C. 20005-1209
`07_14_2006
`Phone: (202) 842-8800; Fax: (202) 842-8465
`u.s. Patent &TMOfc/TM Mail Rcpt or. #2‘.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`DELEGAT’S WINE ESTATE LIMITED
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`V.
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`THE FRESH OYSTER, LLC,
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`Opposer,
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`Applicant.
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`I
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`:
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`:
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`Opposition No. 91-164,955
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`THE FRESH OYSTER LLC’S MEMORANDUM OF POINTS AND AUTHORITIES
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`IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT
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`INTRODUCTION
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`The Fresh Oyster, LLC (“Applicant”) respectfully submits that this opposition should be
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`dismissed because Opposer Delegat’s Wine Estate Limited carmot establish likelihood of
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`confusion as a matter of law. The sole, single, solitary similarity between Applicant’s mark THE
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`FRESH OYSTER for wine (“Applicant’s Mark”) and Opposer’s alleged mark OYSTER BAY &
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`Design for wine (“Opposer’s Mark”) is the term “oyster” — a term so ubiquitous in the wine
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`industry that there are oyster wine festivals, oyster wine menus and numerous wines all
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`commonly referred to as oyster wines. Winemakers, wine sellers, wine critics, restaurants and
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`consumers widely use and recognize the term “oyster” as a generic or highly descriptive term to
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`identify a type of wine. There can be no likelihood of confusion between marks which are
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`similar only because they both refer to a common descriptive term for the pertinent industry.
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`Much as Opposer may wish to secure the market advantage of being the only company using the
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`common term “oyster” as a name for wines, the fact is that the term is widely used. The marks
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`THE FRESH OYSTER and OYSTER BAY & Design are simply completely different marks but
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`for shared use of this generic or common descriptive term.
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`Summary judgment should also be entered to sustain the Counterclaim and cancel Reg.
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`No. 2,714,961 - OYSTER BAY & Design because the unitary phrase “oyster bay” is primarily
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`geographically deceptively misdescriptive under Section 2(e)(3) of the Lanham Act. Oyster Bay,
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`New York is a well-known tourist location on Long Island, New York -— and a region well-
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`known and recognized as a wine growing region. Wine tours are conducted throughout Long
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`Island and Oyster Bay is less than 10 minutes from the international headquarters of one of the
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`world’s largest Vintners — which includes a well-known chardonnay vineyard. Consumers
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`plainly consider geographic location is selecting wine and consider whether a wine is from
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`France, Napa Valley, New York or more localized growing regions such as Long Island.
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`Opposer’s OYSTER BAY & Design mark is primarily geographically deceptively
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`misdescriptive as a matter of law and Applicant is entitled to judgment as a matter of law on that
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`basis.
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`1.
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`2.
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`ISSUES
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`Given the undisputed evidence as to the generic or merely descriptive nature of
`the term “oyster” in the wine industry, is there any genuine dispute that confusion
`is unlikely to result from the contemporaneous use of THE FRESH OYSTER and
`OYSTER BAY & Design for wines, by Applicant and Opposer respectively?
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`Given the undisputed facts regarding Oyster Bay, New York as a wine producing
`region and Opposer’s goods as originating in New Zealand, and the significance
`of geographic origin in wine purchases,
`is there any genuine dispute that
`Opposer’s mark, OYSTER BAY & Design,
`is primarily geographically
`deceptively misdescriptive?
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`PROCEDURAL HISTORY
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`On March 8, 2004, Applicant filed an intent-to-use application for the mark THE FRESH
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`OYSTER for use in connection with wines. Ser. No. 78/380,376 — THE FRESH OYSTER was
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`published for opposition on December 21, 2004. On April 20, 2005, Opposer filed a Notice of
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`Opposition against App1icant’s application based on a likelihood of confusion with its Reg. No.
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`2,714,961 — OYSTER BAY & Design. On March 13, 2006, Applicant filed an answer with a
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`counterclaim to petition cancel Opposer’s registration on the ground that its mark is primarily
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`geographically deceptively misdescriptive. Opposer
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`filed its answer on April 27, 2006.
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`Opposer’s testimony period opens on August 9, 2006 and this Motion for Summary Judgment is
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`timely filed pursuant to Trademark Rule 2.127(e)(l).
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`STATEMENT OF UNDISPUTED FACTS
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`A.
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`Applicant’s THE FRESH OYSTER wine
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`Applicant is a limited liability company located in Richmond, California. See Baral
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`Decl., Ex. 1 11 2. Applicant grows, produces and bottles wines at Husch Vineyards in Mendocino
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`County, California. See Baral Decl., Ex. 1 11 4. Applicant’s principal product is THE FRESH
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`OYSTER, a sauvignon blanc that is “steely and loaded with crisp mineral freshness” so that it
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`“pairs perfectly with seafood.” See Baral Decl., Ex. 1 1] 7. THE FRESH OYSTER wine is an
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`oyster wine. See id. An “oyster wine” is a type of wine that pairs well with oysters and is
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`“usually produced near the sea, with clean and crisp flavors and a certain degree of acidity.” See
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`Abbruzzetti Decl., Ex. 2 1] 9;‘ see also Baral Decl., Ex. 1 11 7.
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`Applicant is not the only company to produce an “oyster wine.” Each year, the Pacific
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`Oyster Wine Competition, an event hosted by Taylor Shellfish Farms, grants “Oyster Awards” to
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`oyster wines based on their compatibility with Kumamoto oysters. See Baral Decl., Ex. 1 1[ 10.
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`Over the past eleven years, judges of the Pacific Oyster Wine Competition have identified
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`characteristics of oyster wines in an attempt to discern “what is an oyster wine.” See id. Overall
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`' The affiant Caterina Carmen Abbruzzetti holds a degree in viticulture, and is a credentialed and experienced
`sommelier. Her qualifications are set forth in detail in her declaration. Ms. Abbruzzetti’s declaration is offered
`under Fed. R. Evid. 702 as an expert in the field of wine, including (by virtue of her education and experience as a
`sommelier) customer purchasing decisions as they relate to wine. Alternatively, Ms. Abbruzzetti’s declaration is
`offered under Fed. R. Evid. 701 as lay opinion testimony.
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`these characteristics result in “oyster wines .
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`.
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`. good wines to accompany oysters. A narrow
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`band of wine styles and characteristics work well with oysters, a vibrant combination of
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`sweetness (glycogen), minerals and the sea.” See id.
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`The Pacific Oyster Wine Competition has received considerable press across the nation,
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`providing publicity and creating recognition of various oyster wines. Disclosing the results of
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`the 2003 Pacific Oyster Wine Competition, WineSquire.com declared that “once again the
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`season has come and gone for oyster wine hunting.” See Baral Decl., Ex.
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`1 1] 11. Each year
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`California Wine and Food also covers the event, helping to select “a group of wines that can be
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`recommended as ‘oyster wines.’” See Baral Decl., Ex. 1 1] 1] 12-14. The Chicago Tribune went
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`so far as to conduct its own informal blind tasting to “[c]onsider the oyster wine,” which
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`included some of the 2004 Pacific Oyster Wine Competition winners. See Baral Decl., Ex. 1 1]
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`15. In addition, The Joy of Oysters, a guidebook and cookbook written by Lori McKean and Bill
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`Whitbeck, includes a section entitled “Oyster Wines” and discusses the Pacific Oyster Wine
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`Competition. See BaralDec1., Ex. 1 1] 16.
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`Like Applicant, vineyards and wineries have promoted their wines as “oyster wines” to
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`emphasize their complimentary nature with seafood, particularly oysters. For example, Jepson
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`Vineyards, Ltd. advertises its 2002 Estate Bottled Sauvignon Blanc as “the ultimate fresh oyster
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`wine.” See Baral Decl., Ex. 1 1] 17.
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`Similarly, Kathleen Inmarm, owner and winemaker at
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`Inman Family Winery notes that she “aim[s] every year for the perfect oyster wine.” See Baral
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`Decl., Ex. 1 1] 18. Winemakers such as Dry Creek Vineyards, Taittinger and Yamhill Valley
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`Vineyards all produce “oyster wines.” See Baral Decl., Ex. 1 1]1] 19-21. Dry Creek Vineyard’s
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`2003 Dry Chenin Blanc is a 5-time winner at the Pacific Oyster Wine Competition. See Baral
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`Decl., Ex. 1 1] 19. Taittinger promotes its Domaine Carneros sparking wine as “the best oyster
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`wine in the world.” See Baral Decl., Ex.
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`1] 20. The 2004 Yamhill Valley Pinot Gris “is your
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`perfect oyster wine.” See Baral Decl., Ex. 1 1] 21.
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`Wine merchants and restaurants have also used the term “oyster wine” to designate the
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`purpose and flavor of certain wines to consumers. Wine merchants host oyster wine tastings,
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`and identify oyster wine as a category of wines for purchase. See Baral Decl., Ex.
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`1 1] 22.
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`Similarly, restaurants promote their wine lists by identifying “the classic oyster wine: Sancere,”
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`hosting “Oyster Hours” during which oysters and oyster wines are offered at a discount price, or
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`listing “oyster wines” on their wine lists. See Baral Decl., Ex. 1 1]1] 23-24; see also Samman
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`Decl., Ex. 3 1] 4. As such, customers looking for “the perfect oyster wine” are able to identify and
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`purchase a wine that matches their food. See Baral Decl., Ex. 1 1] 25.
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`Moreover, wine experts, reviewers and journalists identify and routinely discuss oyster
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`wines. The Gulf Oyster Project aims to promote the consumption of oysters as well as safer
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`harvest procedures. See Baral Decl., Ex. 1 1] 26.
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`In promoting the consumption of oysters, The
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`Gulf Oyster Project provides a list of “Recommended Oyster Wines (by varietal).” See id.
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`In
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`the press, MSNBC, through the Today Show, discusses developments and news in wine and
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`food. For example, Jon Bonné, in Muscadet makes itself the perfect oyster wine, explains why
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`Muscadet has a certain appeal for oyster lovers. See Baral Decl., Ex. 1 1] 27. Similarly, in For
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`the Love of Oysters, Harvey Steinman from Wine Spectator Magazine notes that “a good oyster
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`wine shows snappy acidity, bright fruit character -- usually with some citrus element -- and no
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`oak.” See Baral Decl., Ex. 1 1] 28. Additional articles discussing “oyster wines” are attached as
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`Exhibits B-E to the Declaration of Luna M. Samman. See Sarmnan Decl., Ex. 3. 1]1] 5-8.
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`Aware of these “oyster wine” qualities as well as the recognition and attention “oyster
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`wines” have received, Applicant selected its mark, THE FRESH OYSTER, to emphasize the
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`complimentary nature of wine and seafood, particularly oysters, and to communicate to its
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`consumers that THE FRESH OYSTER is an “oyster wine.” See Baral Decl., Ex. 1 W 6-7.
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`B.
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`Opposer’s OYSTER BAY wines
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`Opposer, a family owned and family managed New Zealand corporation, began making
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`wines in New Zealand in 1947. See Samman Decl., Ex. 3 ‘H 10. Today, Opposer grows and
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`produces wines in two New Zealand regions, Hawke’s Bay and Marlborough. See id. Opposer’s
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`OYSTER BAY wines, which include merlot, pinot noir, chardonnay and sauvignon blanc, come
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`from grapes grown in Marlborough’s Central Wiaru Valley. See Samman Decl., Ex. 3 1] ll.
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`Opposer claims to have named its wines after the “local ‘Oyster Bay’ on the top of New
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`Zealand’s majestic South Island.” See id. Opposer’s website provides “a selection of stunning
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`seafood dishes especially matched” to its wines. See id. These dishes, paired with both red and
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`white Varietals, include “Bluff Oysters on Iceberg Salad with Spicy Thai Dressing,” and “Panko
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`Crumbled Bluff Oysters with Coriander and Lime Dressing.” See id. Opposer is also the official
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`sponsor of “New Zealand’s World Famous Bluff Oyster & Southland Food Festival; an armual 2-
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`day event which showcases a fine array of Southland’s best seafood, fine wine and live
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`entertainment.” See id.
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`C.
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`Oyster Bay, New York
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`Located approximately thirty-five miles from New York City with a population of about
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`300,000, the Town of Oyster Bay sits on the north shore of Long Island and is a major stop on
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`the Long Island Railroad, “the busiest commuter railroad in North America.” See Samman
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`Decl., Ex. 3 ‘H11 13-16.
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`Oyster Bay also enjoys a rich history dating back to at least 1639. See Baral Decl., Ex. 1
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`1] 30. The area served as a starting place for settlers and was primarily an agricultural area
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`throughout the nineteenth century. See id. Today, Oyster Bay is host to a variety of economic
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`endeavors and events.
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`Its residents work in the areas of retail trade, finance, insurance, real
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`estate, and rental and leasing, and professional, scientific, management, administrative and waste
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`management services. See Samman Decl., Ex. 3 1] 16. For the past twenty-three years, Oyster
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`Bay has hosted the Oyster Festival, “the biggest street fair on Long Island, and one of the most
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`vibrant waterfront festivals in the United States,” attended by approximately 150,000 people.
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`See Baral Decl., Ex. 1 111] 31-32.
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`As a noted historic location, Oyster Bay has achieved national recognition. Oyster Bay is
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`well known as the location of President Theodore Roosevelt’s summer home, Sagamore Hill. See
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`Samman Decl., Ex. 3 111] 17-19. Sagamore Hill is a national historic site nm by the National Park
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`Service, and is open to the public. See Pub. L. No. 87-547, 76 Stat. 217 (1962).2
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`Tourists visiting Oyster Bay also have the opportunity to explore the various vineyards
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`and wineries in the region. Long Island, together with the North Fork of Long Island and The
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`Hamptons (in the South Fork), are known as wine growing, producing and bottling areas. See
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`Abbruzzetti Decl., Ex. 2 1[ 10.
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`In fact, these regions are specifically recognized by the U.S. Tobacco Tax and Trade
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`Bureau (“TTB”) as American Viticultural Areas (“AVA”). See 27 C.F.R. § 9.101, 9.133 and
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`9.170 (2005). The TTB regulates and identifies AVAs to control the geographic designation of
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`wines made in the United States. See id.; Abbruzzetti Decl., Ex. 2 1[ 10; Samman Decl., Ex. 3 1]
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`23. A “Viticultural area” is defined in TTB regulations as “[a] delimited, grape-growing region
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`distinguishable by geographical features,” with boundaries as defined therein. 27 C.F.R. § 9.11.
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`2 Sagamore Hill has gained recent notoriety due to the return of President Roosevelt’s revolver that was stolen from
`the site. See Sarmnan Decl., Ex. 3 1] 20-22. Afier an FBI investigation, an individual accidentally discovered the
`revolver in Florida. See id. In an FBI ceremony, the revolver recently returned to its home. See id.
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`Designations may be made by the TTB only upon written petition containing,
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`inter alia,
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`“[e]vidence that the name of the viticultural area is locally and/or nationally known” and
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`“[e]vidence relating to the geographical features .
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`.
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`. which distinguish the viticultural features of
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`the proposed area from surrounding areas.” 27 C.F.R. § 9.3(b). Each such viticultural area is
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`referred to as an “appellation of origin” that is understood as “affording a certain distinction to
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`that region, as a govemment-recognized grape-growing area” which wine makers may use to
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`indicate the origin of their wines. See Abbruzzetti Decl., Ex. 2 1] 10. Winemakers that use at
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`least 85% or more of grapes from Long Island may indicate the AVA name of that region on
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`their labels. See id.
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`Oyster Bay is a town within the AVA Long Island, New York, where wine is grown,
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`produced and bottled. See Abbruzzetti Decl., Ex. 2 1] 10; 27 C.F.R. § 9.170. In fact, Oyster Bay
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`is minutes from Villa Banfi, the worldwide headquarters of Banfi Vinters. See Baral Decl., Ex. 1
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`11] 33-34; see also Samman Decl., Ex. 3 1] 24. Villa Banfi sits on a 127 acre estate with a 60-
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`room Elizabethan manor. See id.
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`“The 60-room mansion .
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`.
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`. sits amid squared lawns and
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`formal English gardens .
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`.
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`. in Old Brookeville.” Id. Villa Banfi is also recognized for its
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`chardonnay vineyard which produces the company’s Old Brookeville Gold Coast Reserve
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`Chardonnay. See id.
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`In addition to Villa Banfi, the Long Island wine region plays host to a number of
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`vineyards and wineries including Jarnesport Vineyards, Paumanok Vineyards, Loughlin
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`Vineyards and Laurel Vineyards. See Baral Decl., Ex. 1 11] 35-38; see also Samman Decl., Ex. 3
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`1] 25. Oyster Bay has even hosted the Long Island taste-off, a smaller version of the Pacific
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`Oyster Wine Competition aimed at identifying the best Long Island “oyster wines.” See
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`Samman Decl., Ex. 3. 1] 26.
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`D.
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`Significance of geographic origin in wine purchasing
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`Where wine is produced and the ability to indicate that origin is an important factor to
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`winemakers because geographic origin speaks to certain characteristics about the taste and
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`quality of wine. See Abbruzzetti Decl., Ex. 2 1] 12. For this reason, an appellation of origin “is
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`highly sought after by wine producing regions.” See id.
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`Geographic origin also plays a noted role in a consumer’s decision to purchase wine. See
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`id. Consumers generally use a combination of four key characteristics in selecting wine: style,
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`geographic origin, producer and price. See id.
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`In selecting a wine, consumers often look to
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`geographic origin based on new developments in the wine industry, news of a particular wine
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`region, taste preferences or personal reasons such proximity to a hometown. See id.
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`SUMMARY JUDGMENT STANDARD
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`The Federal Circuit has summarized the standard for granting summary judgment in
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`cases before the Board: “Summary judgment is appropriate when ‘there is no genuine issue of
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`material fact .
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`.
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`. and the moving party is entitled to judgment as a matter of law.’’’ Copelands’
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`Enter. Inc. v. CNV, Inc., 20 U.S.P.Q.2d 1295, 1297 (Fed. Cir. 1991) (citing Fed. R. Civ. P. 56;
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`additional citations omitted). A fact is material if it would affect the outcome of a case. See
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A material fact is in “genuine”
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`dispute where a reasonable fact finder could return a verdict for the nonmoving party. See id.;
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`Opryland USA, Inc. v. The Great Am. Music Show, Inc., 23 U.S.P.Q.2d 1471, 1472 (Fed. Cir.
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`1992)
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`In evaluating the merits of a motion for summary judgment, “the Board is not to try
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`issues of fact, but determine instead if there are any genuine issues of material fact to be tried.”
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`TBMP § 528.01 (2d ed., v. 1, 2004); see also Dyneer Corp. v. Automotive Prods. plc, 37
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`U.S.P.Q.2d 1251, 1254 (T.T.A.B. 1995). The Board must consider the evidence, and inferences
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`drawn therefrom, in the light most favorable to the non-moving party. See Lloyd ’s Food Prods.
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`Inc. v. Eli ’s, Inc., 25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993); Opryland, 23 U.S.P.Q.2d at 1472
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`(recognizing that “the evidence submitted by the non-movant, in opposition to a motion for
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`summary judgment, is to be believed, and all justifiable inferences are to be drawn in its favor”)
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`(internal quotations omitted). The Board has routinely examined and resolved likelihood of
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`confusion between two marks, the distinctiveness of terms and the primarily geographically
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`deceptively misdescriptive nature of a mark at the summary judgment stage. See Kellogg Co. v.
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`Pack’Em Enter. Inc., 14 U.S.P.Q.2d 1545 (T.T.A.B. 1990), afl’d, 21 U.S.P.Q.2d 1142 (Fed. Cir.
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`1991) (granting summary judgment in defendant’s favor on the ground that no likelihood of
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`confusion existed between opposer’s mark FROOT LOOPS and applicant’s mark FROOTY
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`ICE); In re Save Venice New York Inc., 59 U.S.P.Q.2d 1778, 1781 (Fed. Cir. 2001) (“Whether a
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`mark is primarily merely geographically deceptively misdescriptive is a question of fact.”);
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`Handy-Andy Specialty Co., Inc. v. Coordinated Sales Inc., 150 U.S.P.Q. 308 (T.T.A.B. 1966)
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`(granting summary judgment on the ground that respondent’s mark, GOLDEN DOLPHIN, is
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`merely descriptive of a type of bathroom fixture).
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`ARGUMENT
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`A.
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`There is No Genuine Issue of Material Fact as to the Absence of Any
`Likelihood of Confusion Between Applicant’s Mark and 0pposer’s Mark.
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`The Federal Circuit has set forth the factors to consider, if of record,
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`in testing for
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`likelihood of confusion in In re DuPont de Nemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A.
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`1973). See also In re Majestic Distilling Co., 65 U.S.P.Q.2d 1201, 1203 (Fed. Cir. 2003). “A
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`determination of likelihood of confusion is the ultimate legal conclusion based on findings of
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`fact for each pertinent DuPont factor considered together.3 Giant Food,
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`Inc. v. Nation ’s
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`3 The DuPont factors are: (1) the similarity or dissimilarity of the marks in the entireties as to appearance, sound,
`connotation, and commercial impression; (2) the similarity or dissimilarity and nature of the goods .
`.
`. described in
`an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of
`(continued. . .)
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`Foodservices, Inc., 218 U.S.P.Q. 390, 394 (Fed. Cir. 1983); Olde Tyme Foods Inc. v. Roundy’s
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`Inc., 22 U.S.P.Q.2d 1542, 1544 (Fed. Cir. 1992).
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`It is not necessary to consider all thirteen of the DuPont factors in the instant matter since
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`the record is limited to the pleadings, Applicant’s evidence, the declarations of Christine Helena
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`Baral, Luna M. Samrnan and Caterina Carmen Abbruzzetti, the application of Applicant and the
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`registration of Opposer. There are no other facts of record at this time, apart from the conceded
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`identity of the goods as described in Applicant’s application and Opposer’s registration. Thus
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`Applicant focuses on the following factors:
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`0 The strength of the term “oyster” as a common component of the parties’ marks, insofar
`as it is used in the wine context as a generic or highly descriptive term for a type of wine;
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`0 The similarity or dissimilarity of the marks as to appearance and sound;
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`0 The significant differences of the marks in connotation and commercial impression; and
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`0 The absence of other evidence supporting Opposer’s claim,
`evidence of actual confusion.
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`including the lack of
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`Applicant submits that the first of these factors is most significant. Applicant’s Mark and
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`Opposer’s Mark are unitary marks that, when compared as a whole, are entirely dissimilar except
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`for the term “oyster.” The evidence set forth in the accompanying Declarations readily shows
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`that the terms “oyster” and “oyster wine” are routinely used to designate a type of wine to
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`consumers. Because “oyster,” the only point of similarity between the parties’ marks, is a generic
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`(..continued)
`established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom the sales are
`made, i.e. “impulse” vs. careful, sophisticated purchasing; (5) the fame of the prior mark; (6) the number and nature
`of similar marks in use on similar goods; (7) the nature and extent of actual confusion; (8) the length of time during
`and the conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety
`of goods on which a mark is or is not used; (10) the market interface between the application and the owner of the
`prior mark; (1 1) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12)
`the extent of potential confusion; and (13) any other established fact probative of the effect of use. In re Majestic
`Distilling C0,, 65 U.S.P.Q.2d at 1203.
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`or highly descriptive term for a type of wine, it is entitled to minimal or no weight in the
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`comparison of the two marks, such that the Opposition may be sustained only if other similarities
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`evince a likelihood of confusion. However, no other similarities exist, and in any event the
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`differences between the parties’ marks are sufficient to preclude any likelihood of consumer
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`confusion.
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`I.
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`The only similarity between the parties’ marks is a weak term.
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`a.
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`Spectrum ofdistinctiveness.
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`Trademark law identifies four separate categories of marks, based on their levels of
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`inherent distinctiveness. From most distinctive to least distinctive, these categories are: (1)
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`arbitrary [or fancifial] terms; (2) suggestive terms; (3) descriptive terms; and (4) generic terms.
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`Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 U.S.P.Q.2d 1081, 1083 (1992); In re
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`Nett Designs, Inc., 57 U.S.P.Q.2d 1564, 1565 (Fed. Cir. 2001). Arbitrary or fanciful terms are
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`either coined terms or are “known word[s] used in an unexpected or uncommon way.” Nautilus
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`Group Inc. v. ICON Health and Fitness Inc., 71 U.S.P.Q.2d 1173, 1180 (Fed. Cir. 2004).
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`Suggestive tenns require consumers to “use imagination or any type of multistage reasoning to
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`understand the [terrn’s] significance.” Id. at 1180-81. Descriptive terms “describe qualities or
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`characteristics of a product in a straight forward way that requires no imagination,” and generic
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`terms function as the common descriptive name of a product or class. Id.
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`Arbitrary,
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`fanciful and suggestive terms are inherently distinctive, and therefore,
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`automatically qualify for trademark protection. See id. “A term is descriptive if it immediately
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`describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant
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`goods.” Callaway Vineyard & Winery v. Endsley Capital Group Inc., 63 U.S.P.Q.2d 1919, 1921
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`(T.T.A.B. 2002). A descriptive mark will enjoy trademark protection only upon a showing that it
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`has acquired secondary meaning among consumers, i.e. recognition that consumers view the
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`DC\570951\l
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`term as a source identifier. See In re Merrill Lynch, Pierce, Fenner and Smith Inc., 4 U.S.P.Q.2d
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`1141, 1142 (Fed. Cir. 1987).
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`A term is generic if it is a common descriptive name used to identify a class or genus of
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`products and can never enjoy trademark protection. See Continental Airlines Inc. v. United Air
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`Lines Inc., 53 U.S.P.Q.2d 1385, 1387 (Fed. Cir. 1999). To determine whether a term in generic,
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`the court must determine the primary significance of the mark by examining how the relevant
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`public perceives the mark. See H. Marvin Ginn Corp. v. Int 7 Assoc. of Fire Chiefs, 228
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`U.S.P.Q. 528, 530 (Fed. Cir. 1986); TMEP § 1209.01. This inquiry involves a two-part test:
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`“First, what is the genus of goods or services at issue? Second, is the term sought to be registered
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`or retained on the register understood by the relevant public primarily to refer to that genus of
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`goods or services?” Id.
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`“Evidence of the relevant public’s understanding of a term may be obtained from any
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`competent source, including direct testimony of consumers, consumer surveys, newspapers,
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`magazines, dictionaries, catalogs and other publications.”
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`Continental Airlines Inc., 53
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`U.S.P.Q.2d at 1387. Evidence to support a finding that a term is highly descriptive or generic
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`includes media usage, use by competitors and testimony of persons in the trade. See Dan
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`Robbins & Assoc., Inc. v. Questor Corp., 202 U.S.P.Q. 100 (C.C.P.A. 1979).
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`b.
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`Likelihood ofconfusion where weak terms are involved.
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`The presence of a generic or highly descriptive term affects the analysis of whether a
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`likelihood of confusion exists between two allegedly conflicting marks. Where two marks share
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`the same generic or highly descriptive term, any finding of confusion must be based on
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`similarities between the remaining elements of the marks when considered as a whole. See In re
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`Dixie Restaurants, Inc., 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997) (noting that it is appropriate to give
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`more or less weight to a particular feature of a mark); In re Nat ’I Data Corp., 224 U.S.P.Q. 749,
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`DC\57095l\l
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`751 (Fed. Cir. 1985) (“That a particular feature is descriptive or generic with respect to the
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`involved goods or services is one commonly accepted rationale for giving less weight to a
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`portion of a mark.”). While the Board may appropriately give less weight to a generic term, the
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`ultimate issue should be determined by considering the marks as a whole. Kellogg Co., 14
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`U.S.P.Q.2d at 1550 (“Considering the marks in their entireties,” the court found that despite the
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`shared term “froot,” the marks differed “so substantially in appearance, sound connotation and
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`commercial impression that there is no likelihood that their contemporaneous use .
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`.
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`. will result
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`in confusion.”).
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`If, however, the only similarity between two allegedly conflicting marks is a
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`generic or highly descriptive term, confusion should not be found. See Sweats Fashions Inc. v.
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`Pannill Knitting Co. Inc., 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987) (holding that no likelihood of
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`confusion existed because opposer could not claim exclusive rights to the generic term “sweats,”
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`the only point of similarity between the parties’ marks); see also Carefirst of Maryland Inc. v.
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`FirstHealth of the Carolinas Inc., 77 U.S.P.Q.2d 1492, 1510 (T.T.A.B 2005) (“The record
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`establishes that the healthcare field, including healthcare insurance, is crowded by marks with
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`the elements “care” and “first.” One can hardly adopt a more highly descriptive/generic term in
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`the health care field than “care.” This fact is shown by the various third-party uses. Not
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`surprisingly, the term “care” has been found to be descriptive/generic in various contexts.”).
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`c.
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`The only similarity between the parties ’ marks is the weak term “oyster.”
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`Applying the “primary significance test” to “oyster” as it appears in the parties’ marks
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`reveals that it is a generic or highly descriptive term refening to a class of wines. The terms
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`“oyster” and “oyster wine” are widely used in the industry to stylistically specify a type of wine
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`that pairs well with oysters.
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`The evidence clearly establishes that the terms “oyster” and “oyster wine” identify a class
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`of wine. Winemakers, journalists and wine experts have consistently used the term “oyster” to
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`DC\57095l\1
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`identify a type of wine that compliments oysters and seafood. See Baral Decl., Ex. 1 W 10-28.
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`The Pacific Oyster Wine Competition armually selects the best “oyster wines” and winemakers
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`use the term to promote their wines to consumers. See Baral Decl., Ex. 1 ‘[11] 10-21; Samman
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`Decl., Ex. 3 1] 7.
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`Journalists and wine critics discuss the best oyster wines, while bars and
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`restaurants use the term stylistically to help consumers identify wines that pair well with oysters.
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`See Baral Decl., Ex. 1 M 23-28; Samman Decl., Ex C. 111] 5-6, 8.
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`Given the extensive and widespread third party use of the term “oyster,” the primary
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`significance of the term to consumers of wine can hardly be as a mark. The evidence readily
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`demonstrates that the commonly understood meaning of the tenn “oyster,” when used in
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`connection with “wine,” identifies a type of wine that compliments seafood, particularly oysters.
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`See Abbruzzetti Decl., Ex. 2 1] 9; see also Callaway Vineyard & Winery, 63 U.S.P.Q.2d at 1922
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`(holding that the term “coastal,” when used in connection with wine was descriptive because
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`third parties used the phrase “coastal winery” to identify their that their wine was produced near
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`the coast of California); Continental Airlines Inc., 53 U.S.P.Q.2d 1385 (finding the term “e-
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`ticket” generic for electronic ticketing services in light of widespread third-party use of the
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`term). In light of use of the term “oyster” by winemakers, wine critics, wine sellers and
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`journalists, “oyster” is not a proprietary term associated with only one brand of wine. See id.
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`“Oyster” is the onl